Limitation and Revocation Procedures Before The European Patent Office - Rationale

Rationale

Until a decision of the Enlarged Board of Appeal of the EPO of 1994, namely G 9/93 (reverting earlier decision of the same instance of 1985, namely G 1/84), it was possible for the proprietor of a European patent to oppose its own patent with the aim of centrally limiting it. Decision G 9/93 however deprived patent proprietors of this opportunity. This means that, after G 9/93, the only possibility for the proprietor of a European patent to voluntarily limit the scope conferred by its patent (e.g. for instance to strengthen the patent in view of some newly discovered prior art documents and/or in advance of envisaged litigation) was to request such limitation at the national level, i.e. before the national patent offices or competent courts of the Contracting States, if permitted. The EPC of 1973 made no provision for a limitation procedure, and a fortiori no provision for centrally limiting a European patent before the EPO after the nine-month period for filing an opposition (nine months as from the date of grant of the European patent).

The travaux préparatoires laid out the rationale for a limitation procedure:

"Limitation proceedings would enable patentees to narrow down the protection conferred by a patent post-grant by means of a simple, quick and inexpensive administrative procedure. For example, it may be necessary to limit a granted patent if, because of prior art which was not known during the examination proceedings or prior national rights not taken into account in these proceedings, the extent of the protection conferred is too great. Using the limitation procedure, patent proprietors may themselves reduce the extent of the protection claimed in a manner which is binding, and thus generally preclude disputes over the validity of a patent. Postgrant limitation is also in the public interest, because it limits the protection claimed by the patentee with effect for the general public. This creates legal certainty and facilitates access by competitors to the freely available prior art."